Chaplin estate doesn’t get Israeli National Lottery ads joke

The main theme of the Israeli National Lottery’s advertising in the early 90’s was Charlie Chaplin’s “Little Tramp” character, who appeared in posters, TV ads (in re-creations of scenes from a number of Chaplin movies) and on a variety of merchandise.

Topic: Personality rightsWho: The Israeli National Lottery and the Roy Export Company and Bubbles, Inc.When: February 2000Where: Supreme Court of IsraelWhat happened:

The main theme of the Israeli National Lottery’s advertising in the early 90’s was Charlie Chaplin’s "Little Tramp" character, who appeared in posters, TV ads (in re-creations of scenes from a number of Chaplin movies) and on a variety of merchandise. The Chaplin rights owners were not amused and brought proceedings for copyright infringement. Having got a temporary injunction banning use of the imagery they were also granted final judgment and then succeeded in having the National Lottery’s appeal thrown out. The National Lottery unsuccessfully challenged the claimant companies’ ownership of the Chaplin rights and argued that as a parody the uses came within the "fair use" defence, particularly where the use was to promote gambling. The court held that commercial use of copyright images cannot be "fair use" and damages ($1million is claimed) are soon to be assessed

Why this matters:The UK’s equivalent of the "fair use" defence to copyright infringement claims is the "fair dealing" defence, and as in the this case, it is highly unlikely that a UK Court would regard the defence as applicable to commercial use of copyright material in advertising. Separately, it is interesting that no breach of any personality or performer’s right was claimed in the case, although here in the UK no case law suggests a dead personality’s estate could successfully sue for passing off and unless actual Chaplin footage was used in TV commercials no breach of performer’s right claim would have succeeded. If the action of a scene from a Chaplin movie was closely followed in a UK ad, the recent Guinness/Norowzian case confirms that although without use of the actual historic footage there will be no breach of film copyright (assuming that the film copyright has not expired) replication of the action could infringe the copyright in a film as a dramatic work. If no action was re-enacted and only the character’s "tramp" image was used, there would in the UK be questions over whether the original tramp figure was a copyright work at all and even if it were, questions as to whether the copyright in question might have expired.

All in all, by no means as straightforward a case in the UK as might initially be imagined, though this should not be taken as the green light to wholesale use of Chaplin imagery in Uk ads without taking prior expert advice!